12936372 (P.T.A.B. Nov. 19, 2013)

Ex Parte Qian et al

Patent Trial and Appeal BoardNov 19, 2013

12936372 (P.T.A.B. Nov. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/936,372 10/04/2010 Guoqiang Qian 1200812N US 2137 35227 7590 11/20/2013 POLYONE CORPORATION 33587 WALKER ROAD AVON LAKE, OH 44012 EXAMINER NERANGIS, VICKEY M ART UNIT PAPER NUMBER 1762 MAIL DATE DELIVERY MODE 11/20/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GUOQIANG QIAN, KRISHNA VENKATASWAMY, and LIANG XU ____________ Appeal 2012-006300 Application 12/936,372 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and DONNA M. PRAISS, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s rejection of claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-006300 Application 12/936,372 2 CLAIMED SUBJECT MATTER The claims are directed to a thermoplastic elastomer compound containing organoclay-filled polyamide to provide barrier properties. Claims 1, 7, and 8 are the independent claims on appeal. These claims are illustrative of the subject matter on appeal, and recite: 1. A thermoplastic elastomer compound, comprising: (a) styrene-isobutylene-styrene (SIBS) thermoplastic elastomer and (b) polyamide including organoclay dispersed in the polyamide. 7. A molded article, comprising a compound of Claim 1. 8. A method of using the compound of Claim 1, wherein the method comprises the step of molding the compound into an article that has more than about 280% improvement in reduced oxygen transmission than a compound which has the same SIBS and polyamide but no organoclay. REJECTIONS Claims 1, 4-8, 14-16, and 18-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kim (US 2006/0178466 A1, pub. Aug. 10, 2006) in view of Katayama (US 7,150,294 B2, issued Dec. 19, 2006). Claims 2, 3, 9- 13, and 17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kim in view of Katayama, and further in view of Qian (US 6,407,155, issued Jun. 18, 2002). Appellants do not present separate arguments directed to the dependent claims on appeal including separately rejected dependent claims 2, 3, 9-13, and 17. (App. Br. 7). Therefore, the dependent claims will stand Appeal 2012-006300 Application 12/936,372 3 or fall with their parent independent claims of which claim 1 is representative. ANALYSIS The rejection of claim 1, 4-8, 14-16, and 18-20 as unpatentable over Kim in view of Katayama. Kim discloses a nanocomposite composition with a styrene resin and a polyamide intercalated clay. The Examiner finds that “Kim fails to disclose styrene-isobutylene-styrene as the styrene-based resin” but that Katayama “discloses a composition comprising polyamide resin and styrene- isobutylene block copolymer and teaches that styrene-isobutylene block copolymers provides [sic] for excellent barrier properties against hydrogen gas or water.” (Ans. 4). Thus, the Examiner concludes it would have been obvious to one of ordinary skill in the art to utilize a styrene-isobutylene- styrene copolymer as the styrene-based resin of Kim. (Id. at 5). Appellants first argue that Kim does not disclose a compound containing a styrene-based thermoplastic elastomer: “it is clear that Kim et al. does not anticipate the use of a SIBS thermoplastic elastomer in its composition.” (App. Br. 5). Appellants further argue that in the Kim composition, it is the second resin which “provides the barrier properties” while the styrene-based resin provides a “good balance of physical properties.” (Id. at 6). Appellants contend that a person having ordinary skill in the art, therefore, “would have no rationale to alter the fundamental characteristics of Kim et al.’s styrene-based thermoplastic nanocomposite to create a thermoplastic elastomer nanocomposite with similar barrier properties.” (Emphasis in original). (Id. at 6). Appeal 2012-006300 Application 12/936,372 4 Appellants’ argument is unpersuasive. The Examiner correctly points out—and Appellants do not rebut—that Kim does not exclude or teach away from using styrene-based resins that are elastomeric, and “prefers as the styrene-based resin acrylonitrile-butadiene-styrene which has an elastomeric backbone.” (Ans. 6). Given, as the Examiner has noted, that Katayama teaches that a styrene-isobutylene block copolymer is “excellent in barrier properties against hydrogen gas or water” (Katayama, col. 2, lines 36-38), we agree that it would have been obvious to a person having ordinary skill in the art to use styrene-isobutylene-styrene as the styrene-based resin of Kim’s nanocomposite, even if the second resin also provides barrier properties. Appellants also argue that neither reference teaches a person having ordinary skill in the art how to prepare a nanocomposite comprising styrene- isobutylene-styrene and polyamide including organoclay dispersed in the polyamide. According to Appellants, an unknown amount of experimentation would be required to combine the references. (App. Br. 6). In response, the Examiner notes that Kim teaches that its nanocomposite is prepared by molten-blending wherein the temperature is varied for the type of resin, and importantly, no unpredictable chemical reaction occurs. There is merely melting of the thermoplastic polymers and mixing. (Ans. 6). We agree that there is sufficient teaching by Kim for one having ordinary skill in the art to prepare the claimed compound. Finally, Appellants argue that unexpected results, consisting of improved barrier performance in two examples of its thermoplastic elastomer nanocomposites as compared to similar compounds without Appeal 2012-006300 Application 12/936,372 5 organoclay, rebut the Examiner’s prima facie case of obviousness. (App. Br. 7). We disagree. As the Examiner correctly notes, Kim already teaches the addition of clay to improve barrier properties. (Ans. 7). Thus, we share the Examiner’s determination that Appellants’ examples with and without clay do not compare to the closest prior art, do not exhibit results which are unexpected, and do not exhibit results which are commensurate in scope with the argued claims on appeal (id. at 7-8). The decision of the Examiner rejecting claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cam